Thursday, 15 May 2014

How to Respond to a Trademark Opposition

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

Matt: Hello and welcome back to Trademark Law Radio. This is Matt Plessner speaking and today we are going to be talking about how to respond to a trademark opposition. What does that mean exactly? Well, we are going tell you about that and, of course, beyond. We are speaking, of course today, once again with Attorney at Law Brian Hall from the Traverse Legal office in Traverse City, Michigan, and also with a new office in Austin, Texas. Brian thanks a lot again for joining us today.

Brian: A trademark opposition can come in many forms. Obviously, if somebody claims to be a trademark owner and disapproves of another’s use of a trademark, they can send a Cease and Desist Letter. That is a form of trademark opposition. Obviously, if somebody sues someone in Federal Court for trademark infringement or otherwise, that is a trademark opposition. But what I am really focus on today is a trademark opposition with the Trademark Appeals Board, which is a particular kind of opposition that is specific to those that apply for and sometimes are successfully in registering a USPTO trademark. But the trademark opposition specifically asks to be brought within a thirty (30) day opposition window and it proceeds similar to litigation at that point.

Matt: So Brian, if this were to happen to me or anybody, how do I know if I am involved in one of these trademark oppositions?

Brian: So essentially, there are a couple things that have to happen in order for someone to be involved in a trademark opposition. Number 1, you need to apply for a trademark with the United States Patent and Trademark Office (USPTO). Once they do so and that trademark is prosecuted by the Examining Attorney at the Trademark Office, it gets to, what I mentioned earlier, is an opposition period. So during this opposition period anyone in the world can take opposition with your trademark application for various reasons. It might be that they believe your use will create a likely of consumer confusion with their use. It might be that they believe your use is fraudulent. It might be one of various other reasons, but you will be notified that someone either files a document that extends the amount of time they have to oppose your trademark application or actually institutes a trademark opposition with what is known as a “Notice of Opposition”. So as a trademark owner and a trademark applicant with the USPTO, you would receive that kind of notification.

Matt: And, of course, if this happens, it is a good idea to get a trademark attorney, correct?

Brian: Yeah, but obviously I am biased with that, Matt. But I am biased for good reason. You know, I have seen far too many times where trademark applicants are trying to do it on their own and ultimately may not be successful in getting their trademark registered or lose rights or subject themselves to additional liability because they aren’t doing what should be done. So a trademark attorney can really walk you through the process. And a trademark opposition with the TTAB (Trademark Trial and Appeal Board) is a very fact specific and rule specific procedure, and just like in Federal Court, where the Federal Rules of Civil Procedure guide that process, similar rules of procedure guide a trademark opposition. So you need to know what those are, the deadlines, the time frames, and there are things you must do in order to get evidence admitted, and all those kinds of things that a trademark attorney can help with.

Matt: Brian what are my defenses to a trademark opposition?

Brian: You know, obviously, that depends on what the substance of the opposition is. So, for example, if someone is opposing your trademark because they believe it will create a likelihood of consumer confusion, there are various defenses. One would be priority, meaning if you were the first to use the mark before the other person, then that is a valid defense and would likely lead you in being victorious. However, if that other person was the first to use it, then you can rely upon defenses within that likelihood of confusion analysis. For example, if your marks aren’t the same, your goods & services aren’t the same and if your target markets aren’t the same, all those non-exclusive factors are looked at under the likelihood of confusion analysis, also known as “DuPont Factors”, are defenses you can look to. Obviously, if the basis for the opposition is something else, then you need to look at what kind of defenses might be available there and a trademark attorney can help you do that.

Matt: And finally, Brian, are there ways to avoid the trademark opposition all together?

Brian: Well, I think there are ways to minimize the likelihood of a trademark opposition and that starts with before applying for a trademark with the USPTO, have a trademark availability assessment or sometimes known as a ‘trademark clearance’ done. And what that does is allow a trademark attorney to do the same kinds of searches that an Examining Attorney at the USPTO would do and identify risk factors. Meaning risks out there that could lead to a trademark opposition. So that that trademark applicant can be advised before applying for the trademark that these issues might be coming and prepare accordingly. Because ultimately, if an opposition is filed against a trademark applicant, it doesn’t necessarily mean that process needs to go through to conclusion, meaning that a decision needs to be issued by the TTAB. More often than not what happens is the parties either through trademark counsel or directly, try and come up with an amicable solution and that might allow both of the parties to peacefully co-exist. So, the trademark opposition might ultimately not lead to you having to stop use of your trademark and abandon your application. So there is all kinds of different things that might be available to, like I said, mitigate the risk of a trademark opposition or if a trademark opposition is filed against you, find a creative way to resolve it without getting to the point where you are out of, not only, the money that you spent on applying for the trademark, but, more importantly, the ability to use it moving forward.

Matt: Well, Brian, as always, we appreciate you being here with us today, and, of course, good luck with the new office opening up in Austin, Texas.

Brian: Thanks a lot Matt.

Matt: And, of course, this is Matt Plessner once again here for Trademark Law Radio.

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